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T 1969/17 Lack of reasoning in a decision doesn't make it overtunrnable

This case stems from an opposition that was originally based on the grounds of insufficient disclosure and lack of novelty. During the oral hearing, the ground of Art. 100(c) was raised, but was not admitted into the proceedings.  The opposition was subsequently rejected. In appeal, the opponent maintained the ground of insufficient disclosure and lack of novelty, and further submitted evidence of lack of inventiveness, although inventiveness had never been raised as a ground of opposition. 

The opponent also argued that the ground under Art. 100(c) should have been admitted as being prima facie relevant to the maintenance of the patent. The argumentation seems to have relied on the fact that the impugned decision did not contain any reasoning with respect to relevance.  The Board acknowledged the deficiency in the written decision and even expressed dismay at the Opposition Division's brevity on the subject.

However, the minutes of the oral proceedings showed that the issue had been discussed and that both parties had been given sufficient opportunity to respond. The Board further concluded that the claimed subject matter did not extend beyond the content of the application as filed, and that the Opposition Division had correctly exercised its discretion not to admit the late-filed ground.  

The ground of Art. 100(c) therefore constituted a fresh ground of opposition and was not admitted into the appeal proceedings. The ground of lack of inventiveness was not admitted either, for the same reason. 

A short break

The most recent publication on the Recently Published decisions webpage of the Boards of Appeal took place on 7 April, two weeks ago.

Further, the news message of 17 April  indicated that oral proceedings will not be held in the premises of the Boards of Appeal until 15 May 2020, thereby extending the practice in force since 16 March 2020 (news messages from 1 April, 20 March and 15 March). Consequently, many proceedings will be on hold.

Although the news message also indicated that "The Boards of Appeal will continue to issue written decisions, communications and summonses to oral proceedings", no new decisions were made available since 7 April.

In the absence of new decisions, we will reduce our blog activities for the time being.

Photo "Social distance" by Laura-Del obtained via Flickr under CC BY 2.0 license (no changes made).